Archive for July, 2014

Patent Licensing – The Ultimate Guide

Monday, July 7th, 2014

Patent Licensing Info Guide

Patent licensing is considered one of the most viable means of commercializing a patent. In short, a patent holder seeking to license his patent will not exploit it himself. That is, he will not try to create, market, and sell anything based on the patent. Instead, he will market the patent itself to those who do wish to take those steps. Any variation of this is known as “licensing a patent.” However, it is best to know some facts about licensing patents before one rushes to do so, or assumes that licensing is a “set it and forget it” means of cashing in on their intellectual property.

What is Patent Licensing?

Legally speaking, you have licensed your patent when you (the licensor) grant exploitation rights over your patent to a licensee (the person you are licensing it to.) “Exploitation rights” simply means the right to create, market, and/or sell something based on what that patent protects. A license of this nature is also a legal contract, and that contract is what will spell out in concrete terms precisely which exploitation rights are being granted. These include any performance obligations the licensor might demand of the licensee. This means that if any performance obligations are included in the contract (ie, “You must produce X number of sales by the year X.”), and they are not met, this could lead to the patent licensing being terminated in its entirety. In this context, a license is also revocable – ie, cancellable – if certain terms and conditions are not met. This is a common characteristic of legal contracts in general, with special ramifications for patent licenses. The only way to grant someone irrevocable exploitation rights, it should be added, is to assign them the patent. Assignments, however, are permanent. They entail the sale or outright transfer of the patent by the assignor to the assignee. An in-depth exploration of patent assignments is beyond the scope of this article, but just know that they are an option if irrevocable exploitation rights are something you seek.)

Patent Licensing: How to Capitalize

Now that you know what patent licensing is and what it involves, we can move on to a discussion of how to capitalize on them financially. The primary means of doing this is to seek royalties from the licensee in exchange for using your patent. Royalties, typically, are paid over the life of the patent. The amount and frequency with which royalties are paid from licensee to licensor must also be spelled out in the license agreement. In this way, the licensor is protected. If the licensee fails to pay the royalties that were agreed to, the licensor can revoke the patent license and retain sole exploitation rights over it.

Patent Licensing Structures

Here is an example of how this might work in practice. Let us say you licensed your patent to someone in exchange for royalties amounting to 20% of all sales resulting from your patent on a yearly basis. If your licensee creates something from the patent that results in a profit of $100,000, you would be entitled, by the terms of your license agreement, to $20,000 of that profit. If the licensee failed to disburse those funds to you, he/she would be in violation of the agreement and you could then proceed to revoke the license. (Again, the danger with using patent assignments over patent licenses is that failure to pay royalties will not revoke the rights you have already assigned. You will be free to litigate for the lost royalties, but this is often an expensive and lengthy process. With a patent license, the matter is more or less open and shut. Failure to pay royalties means revocation of the license.) Now, some more elaboration on performance options is in order as well. Performance options are a form of protection for the licensor. They are a way to ensure that the licensee does not “sit on” the patent, ie, do nothing with it and thereby starve the licensor of the ability to capitalize on it elsewhere. There are two basic types of performance options that can be written into a patent license agreement.

Patent Licensing Performance Options

The first kind is pre-market entry milestones. In short, these are obligations that the licensee is expected to achieve or meet. They could include things like bringing the invention under a trial or validation process, creating a working prototype, satisfying pertinent regulations, progressing through any clinical trials that exist, and so forth. These performance obligations ensure that things move along at a steady pace without any income-killing lag in activity. It prevents the licensee from become inactive as a rights holder. The second kind of performance obligations are post-market entry sales targets. These take effect once the invention is out of the development stage and available for sale on the market. Very simply, such obligations include sales targets, profit margins, or any other measurable goal tied to the performance of the idea in the free marketplace. These obligations give the licensee concrete goals that he must attain and give the licensor a bare minimum of royalties that he can expect to reap.

Other Recommended Patent Licensing Articles:

In closing, licensing a patent is one of the most reliable ways to capitalize off of one’s intellectual property. By working with a patent lawyer to draft a patent license agreement and choosing your licensee(s) carefully, you will greatly increase your chances of successfully licensing your patent. If you have any questions, feel free to email me at

How to Conduct a Patent Search

Wednesday, July 2nd, 2014

Patent Search One of the most common obstacles facing the new inventor is how to conduct a patent search. There are many reasons why an inventor would want to do this. The most obvious reason is to justify spending a great deal of time and money on an invention by determining that no one else has patented it. You may even have a specific patent number that you want to investigate further for any similarities to your project. Whatever the reason may be, the ins and outs of conducting a patent search are not always obvious. In this guide, we will explain how to do so in easy to follow steps.

How to Conduct a Patent Search Video

How to Conduct a Patent Search Step One:

Narrow your search to a 5-15 very specific names. This is a crucial yet oft-overlooked step in the patent search process. Before running any type of search, anywhere, you need to narrow your search to a handful of very specific names. This is because the United States Patent and Trademark Office (USPTO) demands specificity. The vaguer a patent is the more control the holder can exercise over the market. Therefore, there is an immense burden on patent applicants to be as narrow and specific about the nature of their patent as possible. You need to heed this fact when running a patent search. For example, if the patent you are looking for pertains to an online shopping database that ties a user’s shopping preferences to his shopping history, running a search for “online shopping database” is almost pointless in this context. It will return more results than you could possibly screen, and few if any will be relevant to what you are looking for.

Instead, a much better search would be something like “online shopping history based matching metrics.” The closer you can get to describing what the patent truly protects, the more helpful your search results will be. Simply think long and hard about what you are looking for and come up with 5-15 very specific potential names for it. These are the names you will use to conduct your search.

How to Conduct a Patent Search Step Two:

Run the search via the USPTO’s official website. It used to be that the only way to run a patent search was hiring a patent attorney. Prior to the advent of the Internet, these attorneys had a near exclusive monopoly on running searches and doing all manner of patent-related work. Fortunately, this is no longer the case. Anyone who wants to run a patent search can visit the USPTO website and do so in a simple, self-service fashion. There are a couple of options at this page that you can use depending on your exact needs. If you just want to run a cursory search for the patent you have in mind, the Quick Search will work wonders. From here, you can type in two descriptive terms and specify the years between which you would like to search: either 1976 to the present or 1790 to the present. Now, common sense will go a long way towards making your life easier in this regard. If the patent you are searching for is in any way high-tech, you can filter out a lot of irrelevant results by choosing the “1976 to the present” option. However, if your invention is timeless or mechanical in nature, the full “1790 to the present” option is probably best. You can also drill down into the patent database for the exact type of information you want. Clicking the “All Fields” drop-down menu turns up a cavalcade of search options. You can search for the abstract, the issue date, patent number, assignee name and city, and about a dozen other options.


However, what if you already have a patent number and just want to see information about what it pertains to? This link takes you straight to a patent number search. Just key in the number and click “Search” to find the full text of the patent in question. SRC: Now, you may notice in using these pages that the USPTO’s website is not the most user-friendly resource out there. Luckily, there is an easier way: Google Patent Search. The reason we covered the USPTO’s site first (or at all) rather than Google is because this is the official first source of all patent-related data. While Google is by all counts reliable, you should use the USPTO’s site if there are any worries about gaps in the patent records you are seeking.

How to Conduct a Patent Search Step 3:

Use Google Patent Search Google Patent Search is a beta service that combines the easy searching of Google with the patent data from the USPTO. That is the true beauty of using Google instead of the USPTO: your search results and patent profiles are significantly cleaner, more readable and easier on the eyes.


As a demonstration, we will run a search for the patent on the electrophotographic copier, or “copy machine.”

As you can see, the page is very helpfully divided up into distinct sections, making it easy for you to find the information you are interested it. You can choose to download the whole patent, view it as an Adobe PDF document, or even click a direct link to the USPTO’s record. On this same page, you can also view the patent’s list of citations, the claims it makes, and the drawings the patent holder accompanied with his patent application. Again, while these things can be found at the USPTO site, those unfamiliar with patent records will waste hours looking for what Google organizes so readily.

There you have it: three simple steps to conducting a patent search. Above all, remember that the more specific your searches are, the more likely you are to find the patent you want – or – the more justification you will have to conclude that no one has your patent, if the search comes up empty. Good luck!

Eric Corl is the Founder and CEO of, a marketplace for new technology and products that gives inventors the opportunity to showcase their intellectual property to consumer product companies, entrepreneurs, retailers, and manufacturers. You can email him at You can visit the site by clicking here > Patents for Sale.

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Royalty Rates Made Easy – The Guide

Tuesday, July 1st, 2014

Royalty Rates Chart

One of the most important steps in licensing a patent or idea is establishing the royalty rate you will receive in return for granting a licensee the right to manufacture and sell your invention. In this article we will explain what royalty rates are, how to calculate the proper royalty rates, elements that effect royalty rates, protections to put in place, and other important things to consider when licensing an idea.

What are Royalties?
Royalties are payments that are provided to a licensor by a licensee in exchange for the right to operate under your idea.

Royalty rates are affected by several criteria:

Criteria Description
Exclusive or Non-Exclusive Exclusive idea licensing will result in a higher royalty rate than non-exclusive licenses.
Upfront Sum The higher the up-front sum being paid to the licensee, the lower royalty rate the licensor will likely receive as it is an element of the overall compensation.
Industry Standard Royalty Rates Each industry tends to have an ‘industry standard’ royalty rate. See the end of this article for a list of industries and their average royalty rates.
Company Standard Rates Companies that have a good amount of experience in licensing ideas tend to have a standard package that they offer inventors. The larger the company is and the bigger their track record, the more leverage they will have in negotiating your royalty rate.
Intellectual Property Stage The further along the intellectual property is to commercialization, the less risk the licensee will face, and the higher the royalty will be paid to the licensor.
Market Potential The royalty rate will heavily depend upon the market potential of the idea you are looking to license. This can be difficult when you are trying to license an invention that is developing a new market or is part of a new market that has not yet shown it’s full potential.
Licensing to an Infringer If a company has been infringing on your idea, you can be entitled to damages, a % of past profits, and typically command a higher royalty rate.
Related Intellectual Property Included Packaged intellectual property can command higher royalty rates.
Testing/Certification If your intellectual property requires testing or certification prior to being brought to market, having these milestones completed will lead to higher royalty rates.
Investment Required All things being equal, the higher the investment required to getting a product to market, the lower the royalty rate that will be paid.

Exclusivity is when a licensor gives a licensee the exclusive right to market and sell a product by intellectual property.

Non-Exclusivity is when an intellectual property holder provides the right to market and sell a product to a licensee but retains the right to license it to others as well.

Exclusivity can be further broken down to regions or specific locations as is the common practice with franchises. The proper route often depends upon how a product will be delivered to the customer, the demand for the intellectual property, and the market size.

Protections for Idea Licensors:

  1. Performance Obligations
  2. Void Agreement
  3. Exclusive to Non-Exclusive

Performance obligations protect an inventor from getting stuck with a dud of a licensee. You will want to include these provisions in your idea licensing agreement that ensure certain milestones are being met. These milestones can be distribution in a number of stores, sales targets, royalty totals, or best efforts being made. If performance obligations are not met, an agreement can direct for a number of actions to occur. Such actions could include but are not limited to a voiding of the agreement, financial compensation, or for the licensee to switch from exclusive to non-exclusive license.

Licensing to a Company Infringing on Your Idea:

Often times, idea licensing takes place after it has become apparent that intellectual property is being infringed upon. This can be a sticky situation given that if the parties do not come to an agreement, it can often end in costly and lengthy litigation. As a note to inventors, it is important to keep in mind the overall short term and long term costs to litigation. While it may seem like a card to play, be careful not to send willing parties away from the table without giving negotiation a good faith effort.

Note:  It is important to note that royalty rates and damages determined by the court are generally higher. However, avoid litigation if you can – it often ends up ‘costing’ you much more than you anticipated.

If you do get into a position where a company that is infringing upon your intellectual property is unwilling to talk or to come to a reasonable agreement, you may want to consider partnering with a idea licensing law firm that may be able to command more respect at the negotiating table.

How to Command Higher Royalty Rates and Upfront Idea Licensing Fees:

These are several factors that lead to higher invention royalty rates.

– High tech invention ideas.
– Inventions that solve costly problems.
– Inventions that provide large benefits.
– Has already met industry testing requirements.
– Has already met industry certification requirements.
– Commitment for purchase orders.
– Existing sales.
– Lack of suitable substitute products/technology.

We will be continually updating this article with information on royalty rates. If you have any questions, feel free to contact us by submitting your contact information here. As always, we ask that you sign up for our newsletter for ongoing tutorials. If you are interested in an outright sale, read our article on Selling a Patent.